A New Era for IP Owners:
Confronting the Penalties of Globalization
April 25-27, 2018
Sheraton Palo Alto
As we reap the benefits of globalization, tapping diverse pools of talent around the world while selling products in new markets, our opportunities are fraught with risk, challenges, and even penalties. Collaborating with foreign inventors requires juggling competing laws around IP ownership. Selling and licensing IP rights in multiple regions with differential pricing complicates RAND royalty calculations. Today, a legal victory in E.D. Texas can have little impact on a market place where global litigation is increasingly central. Meanwhile, changing U.S. policies seem to be embracing Cold War-era protectionism. We must tread carefully in order to create and protect IP on a global scale without penalty, at home as well as abroad. What can we do now to prepare for change? Join your peers at the annual Silicon Valley IP law conference. Space is limited. Register now!
Other Agenda Highlights:
- The Rise of Collective Licensing as Alternative to Litigation
- Trade Secrets: When to Call the F.B.I.?
- Open Source Security Issues
- USPTO New Leadership, Big Changes Afoot
- Where to File for Patent Protection, and Why?
- and more!
(as of February 2nd. Please check back for agenda updates.)
TUESDAY, April 24th
Advisory Board's Cocktail Reception & Welcome Dinner for Corporate Counsel (By invitation only. Space is limited.)
WEDNESDAY, APRIL 25th
Breakfast and Registration
Patent Protection’s Swinging Pendulum in A Whole New World
Patent protection in America is impacted by legal, political, and economic changes. Over the past year, we have inaugurated a new Administration, Brexit became a reality, the U.S. Supreme Court has been tackling many types of IP questions, District Court litigation filings have declined, the USPTO is preparing for new leadership, and just as we are coming to grips with the IPR process, its constitutionality is now at issue. How is the pendulum of U.S. patent protection swinging in this whole new world?
- What is the impact of U.S. and global political and economic factors on the IP landscape?
- New USPTO Director: What changes are on the horizon?
- What legislative changes might we expect?
- What judicial trends do we see?
- What can we do now to prepare for change?
Associate General Counsel, IP
Dana Robert Colarulli
Director of the Office of Governmental Affairs
William H. Neukom Professor of Law
Stanford Law School
Senior Director, Wireless Programs
Via Licensing Corporation
Hon. Randall Ray Rader (Ret.)
U.S. Court of Appeals for the Federal Circuit
Valuing Patent Litigation Worldwide: Current Trends in Patent Damages
Evolving Litigation and IPR Strategies
Pursuing an IPR is expensive, and with the constant changes in IP law, there are many moving parts to consider before a defendant should respond to a complaint. Is this a case where you want to pursue an IPR? Do you stand a strong chance of success based on non-infringement, or § 101 or § 112 defenses? If you want to pursue an IPR, how soon should you do it? And should you attack all patents or just some? Should you stay the case? If you seek a motion to transfer, how do you time that with the venue question and other defenses? Find out how companies are juggling these moving parts.
IP Litigation Counsel
Senior Director, IP Litigation
Partner & Dept. Chair -IP (San Francisco)
Senior Director of Litigation
Sony Interactive Entertainment
Luncheon Keynote: "The Role of the Judiciary in Modern Times - IP Law & Beyond. Calculating Royalty Rates and More"
We are honored to welcome Hon. James L. Robart as our Luncheon Keynote Speaker. Judge Robart's decision in Microsoft v. Motorola marked the first time a U.S. Court made a determination of RAND licensing terms for a standard-essential patent (SEP) portfolio license between two parties. The Judge's decision also set a precedent for how to determine RAND terms for a patent portfolio. As technology evolves and industries try to implement new standards, we are increasingly grappling with how to determine RAND licensing terms for SEPs, making Judge Robart’s decision ever-relevant.
More recently, Judge Robart issued a temporary nationwide injunction against an executive order that sought to implement a travel ban against foreigners from certain nations. Silicon Valley was concerned that the executive order would negatively impact its employees as well as the high-tech industry’s ability to recruit and retain talent from around the world. As the Judge stated, "the Constitutional role of the Judiciary in our tri-part government is to ensure actions taken by the Executive and Legislative branches comport with our Laws and Constitution."
Please join us in welcoming Judge Robart as he shares his views on determining RAND licensing terms, as well as the Judiciary's role in IP law and other issues facing us in modern times.
Hon. James L. Robart
District Court for the Western District of Washington
Establishing Licensing Fees in a Whole New World: The Rise of Collective Licensing
In our new reality, companies are manufacturing and selling products outside the U.S., and there is increasing litigation in Europe and Asia. The patent landscape is vastly different, and companies are reluctant to expend energy or resources on mutually destructive litigation. What lessons did we learn from the smart phone wars, and how do we avoid the same mistakes as we enter a new IP landscape with new technologies and an increasingly global market place? Join us for a discussion on how companies are embracing collective licensing as a tool for avoiding litigation.
VIA Licensing Corporation
IP Attorney & Member
Leydig, Voit & Mayer
SVP & Head of US IP Center (Silicon Valley)
Head of Patents
Developing an IP Strategy and Portfolio in a Global Marketplace
Obtaining and maintaining patent assets is expensive. IP litigation District Court filings have declined. The market for patent sales has constricted. The Alice decision and PTAB proceedings have opened the door to patent validity challenges while making new patents harder to attain. In this new environment, how are companies adjusting their patent strategies? What are the challenges of maintaining a global IP portfolio?
Procopio Cory Hargreaves & Savitch
VP, Head of Global Patent Group
Assistant General Counsel & Director of IP Law
Senior Patent Counsel
IP Counsel As Business Advisor: Balancing Litigation Risk and Business Opportunity
As IP assets increasingly become the core value of today’s companies, IP Counsel play a greater business role within their organizations. But how do you balance your role of legal advisor with the increasing business advisor role? How do you assess litigation risk when making business decisions? How do you frame pre-litigation issues to your business leaders? What is the best way to get business support for or against litigation? If your patents are potentially being infringed, how do you present the case? How do you frame legal risk in a way that is helpful for making business decisions?
SVP, Deputy General Counsel & Chief IP Counsel
Foley & Lardner
Deputy General Counsel
Hollingsworth & Vose Company
Senior Corporate Counsel
Counsel, Litigation and Patents
Global Head of IP
Negotiating Indemnity in Software and Hardware Licenses
This panel will discuss strategies for negotiating around IP indemnity clauses in software and hardware licenses. What are alternative ways to get protection if the other company refuses to indemnify you? How to deal with combination claims? How can you structure indemnity in joint development agreements when you offer licenses to the non-owner? What works for both sides?
Senior Patent Counsel
Shareholder & Patent Attorney
Associate General Counsel, Sr. Director of IP
Palo Alto Networks
Join us for an informal Q&A with Judge James Robart. Questions may be emailed to firstname.lastname@example.org
THURSDAY, APRIL 26th
Breakfast & Round Table to be Announced. Stay tuned!
Open Source: Recent Developments, Security Concerns, and Best Practices For Ensuring Compliance
Open source can no longer be avoided in software development, making compliance more important than ever. Join us for a discussion on how companies are interpreting licensing terms and structuring their compliance programs in a way that is effective, reliable, and cost efficient. What scanning tools do companies use to ensure compliance? How can you show that the open source you are using is safe? How can you ensure security around third-party open source components? How have other companies gotten into trouble when using or disclosing open source platforms in different countries?
Director of IP
Senior Counsel, Products & IP
IP Attorney & Shareholder
Associate General Counsel, Products & Patents
Top 10 IP Cases That You Need to Know About
Amy Van Zant
Orrick Herrington & Sutcliffe
Trends in Global High-Tech IP Litigation
As companies increasingly work with foreign inventors and do business abroad, we often find ourselves entrenched in litigation outside of the U.S. This panel will discuss how to handle foreign litigation. How do you choose foreign counsel? How do you manage litigation as an outsider with little or no understanding of local laws and customs? We will discuss recent trends and experiences litigating in different parts of the world. What is the status of IP litigation in China and India? What is happening in Germany? What is the status of the UPC? How do damages and injunctive relief differ around the world?
Director, Patent Licensing
Dr. Markus Gampp
VP & Chief IP Counsel
Trade Secrets: Monitoring for Trade Secret Theft and Best Practices for Civil and Criminal Actions
The Defense of Trade Secrets Act was passed in 2016, extending protections that exist under the Economic Espionage Act of 1996. In addition to criminal action, civil action can now be brought in federal court for trade secret misappropriation. This panel will share best practices for identifying and keeping track of your trade secrets. How do you monitor for trade secret theft? How do you protect trade secrets in employment agreements? Once you’ve found evidence of theft, what do you do? Should you pursue a civil or criminal action, or both? When should you call the FBI, and what are the consequences? What are the pros and cons?
Diane Gabl Kratz
Senior IP Counsel
Associate General Counsel, IP
McDonnell Boehnen Hulbert & Berghoff
Associate General Counsel, Specialty Products Division
Assistant US Attorney
U.S. Department of Justice
The Power of Licensing as a Tool to Move Your Business Forward
How can you effectively use licensing strategies to move your business forward? This panel will examine how to assess your current licensing strategy to determine whether you are moving in the right direction. Are there new ways to help your business succeed? How can you creatively structure your IP licenses so that you can use the same IP in other commercial transactions and other licenses? We will consider traditional cross licenses, licenses on transfer, springing licenses, and more. How do you deal with the “forever encumbrance”? Are there other ways to achieve the same goals? How do you deal with licenses in the context of M&As? How can you avoid patent exhaustion?
Assistant General Counsel
Associate General Counsel, Director, IP Group
Managing Partner (Palo Alto)
Finnegan Henderson Farabow Garrett & Dunner
Associate General Counsel & Director
Managing Counsel, Patent Licensing Group
Associate General Counsel, Patent Litigation & Transactions
FRIDAY, APRIL 27th
Breakfast Workshop -
Cross Border IP Transactions: Recognizing Export Control Issues in Inventorship, Open Source, and M&As
Procopio Cory Hargreaves & Savitch
End of Program
Please check back for program updates.
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